# HARDIE TRADING LTD. AND ANR v. ADDISONS PAINT AND CHEMICALS LTD

- **Citation:** [2003] Supp. 3 S.C.R. 686
- **Court:** Supreme Court of India
- **Decided:** 2003-09-12
- **Case number:** Civil Appeal Nos. 5307-11 c of 1993
- **Bench:** Ruma Pal, B.N. Srikrishna
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/hardie-trading-ltd-and-anr-v-addisons-paint-and-chemicals-ltd-19393
- **Pages:** 34

## Headnote

Trade and Merchandise Marks Act, 1958 s.46 (1)(3) r/w 2(2)(b),
48(2) r/w 2(m)-Removal of registered trademark on ground of non-userRegistered user agreement between H, inventor and holder of registered
C trademarks comprising words 'Spartan' and 'Spartan Ve/ox' and rear
picture of upper body of helmeted warrior carrying shield and spear
(Hardie device), and 'A ', a manufacturer of paints and other surface
cuttings with technical know-how supplied by H- 'A's application for
registration of H's trademarks rejected on grounds of identity and
D deceptive similarity- 'A' thereafter applying for rectification of register
for deletion of H's trademarks-Application allowed and H's trademarks
expunged on ground of non-user-Appeals by H dismissed by the High
Court-Held, the order expunging H's trademarks was erroneous; there
was no absolute non-user of trademark by H during period of five years
and one month prior to applications for rectification; there were special
E circumstances which justified H's non-user of trademark-Further held,
the onus to establish the first two conditions in s. 46 before registered
trademark can be removed is on the applicant whereas burden of proving
existence of special circumstances affecting use of trademark is on the
proprietor.
F
Trade and Merchandise Marks Act, 19 58 s.18-Application for
registration of trademarks-'A' applying for registration of trademark of
Hardie Device in 'A 's name-Order of Registrar granting registration
affirmed by High Court-Held, High Court erred in not dealing with 'A 's
G claim on merits and in concentrating only on the objections by H and its
agent Hansa-Further held, 'A's application for registration of H's
trademarks in its name ought to be rejected.
Trade and Merchandise Marks Act, 1958 ss.12, 18, 102-Application
to Registrar by 'A 'for registration of H's device-Objections of Hand its
H agent Hansa overruled and 'A's application automatically allowed by
686
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD.
687
Registrar and affirmed by High Court-Whether orders of the Registrar A
an{i High Court sustainable-Held, the approach of the Registrar was
fallacious; the merits of 'A's application for registration was required to
be independently assessed by the Registrar irrespective of whether H and
Hansa were able to prove their right to use the device in question-Held,
fi1rther on facts 'A's application ought to have been rejected since there B
was no positive proof adduced by 'A' of an intention to use the device.
Interpretation of Statutes-Trade and Merchandise Marks Act, 1958
ss.46 and 56-'person aggrieved'-Has, for the purposes of removal on
ground of non-user under s. 46 a connotation different from the phrase used
in s. 56 for canceling, expunging or varying an entry wrongly made in C
the Register-In latter case, locus standi would be ascertained liberally
since it would not only be against the interest of other persons carrying
on same trade but also in the interests of the public to have such wrongful
entry removed-Practice and Procedure.
The trademarks in dispute, invented by the predecessor in interest D
of the first appellant H, consisted of the words 'Spartan' and 'Spartan
Velox' and a rear picture of the upper body of a helmeted warrior
carrying a shield and spear (Hardie device}. H entered into registered
user agreement on July 11, 1963 (initially for a period of three years
and operative upto August 31, 1968} under which 'A' would be the E
registered user of H's trademarks. 'A' would set up a factory at
Madras to manufacture the surface coatings according to H's formulae.
'A' undertook that all formulae and technical information which may
be supplied to it by H would be treated as strictly confidential.
Apart from the clauses which ensured H's strict supervision over the F
quality of the surface coatings manufactured by 'A', the agreement
specified :
"The said trade marks shall not be used in conjunction with or
in close juxtaposition to any other trad

## Text

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A
B
HARDIE TRADING LTD. AND ANR.
v.
ADDISONS PAINT AND CHEMICALS LTD.
SEPTEMBER 12, 2003
[RUMA PAL AND B.N. SRIKRISHNA, JJ.]
Trade and Merchandise Marks Act, 1958 s.46 (1)(3) r/w 2(2)(b),
48(2) r/w 2(m)-Removal of registered trademark on ground of non-userRegistered user agreement between H, inventor and holder of registered
C trademarks comprising words 'Spartan' and 'Spartan Ve/ox' and rear
picture of upper body of helmeted warrior carrying shield and spear
(Hardie device), and 'A ', a manufacturer of paints and other surface
cuttings with technical know-how supplied by H- 'A's application for
registration of H's trademarks rejected on grounds of identity and
D deceptive similarity- 'A' thereafter applying for rectification of register
for deletion of H's trademarks-Application allowed and H's trademarks
expunged on ground of non-user-Appeals by H dismissed by the High
Court-Held, the order expunging H's trademarks was erroneous; there
was no absolute non-user of trademark by H during period of five years
and one month prior to applications for rectification; there were special
E circumstances which justified H's non-user of trademark-Further held,
the onus to establish the first two conditions in s. 46 before registered
trademark can be removed is on the applicant whereas burden of proving
existence of special circumstances affecting use of trademark is on the
proprietor.
F
Trade and Merchandise Marks Act, 19 58 s.18-Application for
registration of trademarks-'A' applying for registration of trademark of
Hardie Device in 'A 's name-Order of Registrar granting registration
affirmed by High Court-Held, High Court erred in not dealing with 'A 's
G claim on merits and in concentrating only on the objections by H and its
agent Hansa-Further held, 'A's application for registration of H's
trademarks in its name ought to be rejected.
Trade and Merchandise Marks Act, 1958 ss.12, 18, 102-Application
to Registrar by 'A 'for registration of H's device-Objections of Hand its
H agent Hansa overruled and 'A's application automatically allowed by
686
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD.
687
Registrar and affirmed by High Court-Whether orders of the Registrar A
an{i High Court sustainable-Held, the approach of the Registrar was
fallacious; the merits of 'A's application for registration was required to
be independently assessed by the Registrar irrespective of whether H and
Hansa were able to prove their right to use the device in question-Held,
fi1rther on facts 'A's application ought to have been rejected since there B
was no positive proof adduced by 'A' of an intention to use the device.
Interpretation of Statutes-Trade and Merchandise Marks Act, 1958
ss.46 and 56-'person aggrieved'-Has, for the purposes of removal on
ground of non-user under s. 46 a connotation different from the phrase used
in s. 56 for canceling, expunging or varying an entry wrongly made in C
the Register-In latter case, locus standi would be ascertained liberally
since it would not only be against the interest of other persons carrying
on same trade but also in the interests of the public to have such wrongful
entry removed-Practice and Procedure.
The trademarks in dispute, invented by the predecessor in interest D
of the first appellant H, consisted of the words 'Spartan' and 'Spartan
Velox' and a rear picture of the upper body of a helmeted warrior
carrying a shield and spear (Hardie device}. H entered into registered
user agreement on July 11, 1963 (initially for a period of three years
and operative upto August 31, 1968} under which 'A' would be the E
registered user of H's trademarks. 'A' would set up a factory at
Madras to manufacture the surface coatings according to H's formulae.
'A' undertook that all formulae and technical information which may
be supplied to it by H would be treated as strictly confidential.
Apart from the clauses which ensured H's strict supervision over the F
quality of the surface coatings manufactured by 'A', the agreement
specified :
"The said trade marks shall not be used in conjunction with or
in close juxtaposition to any other trade mark and shall at all times G
be so described as clearly to indicate that they are the trade marks of
the Proprietors and that they are being used by the Users only by way
of permitted use."
Hallowed 'A' to continue to use the tradema;ks and device till
December 1971. In November 1971, 'A' applied for registration of a H
688
SUPREME COURT REPORTS [2003] SUPP. 3 S.C.R.
A device consisting of frontal view of a standing helmeted warrior
holding a shield and spear. In November 1976, 'A' obtained registration of the standing warrior device. In the same year it filed three
applications before the Registrar of Trade Marks at Mumbai for
registration of H's trademarks. These applications were rejected on the
B grounds of identity and deceptive similarity with 'H's registered
trademarks. 'H' had registered this trade mark in 1946, with the
Registrar of Trade Marks in Calcutta.
On March 31, 1977 an agreement was executed between Hand
its agent Hansa appointing the latter the registered user of H's
C trademarks in India. Two months later, 'A' applied in Calcutta under
s.46(1) of the Trade and Merchandise Marks Act, 1958 (Act) for
rectification of the register for deletion of H's trademarks. In November
1977. 'A' filed two applications for registration ofHardie's device and
three additional applications for registration of the device with the
D words 'Spartan' and 'Spartan Velox'. While these applications were
pending, H and Hansa filed suits in the Calcutta High Court for an
injunction restraining 'A' from dealing with H's trademarks or device.
'A' consent order was recorded in the suit permitting 'A' to use the
registered trademarks and device of standing warrior till the disposal
E of the suits.
In December 1979 'A' filed a civil suit in the Madras High Court
seeking a permanent injunction restraining H's agent Hansa from
selling paints in containers which were identical to or deceptively
similar to H's trademarks or device which 'A' claimed had been used
F by it since 1963. An application by 'A' alleging contempt was disposed
of by the Madras High Court with the direction that status quo was
to be continued in terms of the consent order recorded in the suit at
Calcutta.
G
In the same month, H filed an application in the Calcutta suit for
stay of the rectification proceedings pending before the Joint Registrar
of Trade Marks at Calcutta. The application was dismissed by a Single
Judge of the Calcutta High Court and the appeal therefrom was
dismissed by the Division Bench. The application for rectification filed
H by 'A' was allowed by the Joint Registrar of Trade Marks at Calcutta
..
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD.
689
by his order dated September 12, 1985 as a result of which H's A
trademarks were expunged from the Register of Trade Marks. The
appeal by both H and Hausa was dismissed by a Single Judge of the
Calcutta High Court and affirmed by the Division Bench. Hand Hausa
appealed to this court.
An application filed by Hausa for stay of the registration proceed- B
ings relating to 'Spartan' and 'Spartan Velox' was rejected by the
Assistant Registrar of Trade Marks of Madras on June 19, 1989. On
the same day, 'A's application for registration of H's device was
allowed. By a common judgment, a Singh Judge of the Madras High
Court dismissed H's appeals. By a majority of2: 1, the Division Bench C
affirmed the judgment of the Single Judge. H then appealed to this
Court. The decision of the Registrar at Madras allowing 'A's application
for registration of 'Spartan' and 'Spartan Velox' was also appealed
against. While admitting the appeals, this Court directed continuation
of the status quo.
D
Allowing the appeals, the Court
HELD : 1.1. There was as such no "absolute non-user" of the
trademarks by H during the period of five years and one month prior
to the applications for rectification. The evidence negates H's alleged
intention to abandon the use of the trademarks. This was sufficient for
this Court to allow the appeal by H. (708-F)
E
1.2. The use of the goods as contemplated by s.2(2)(b) of the Act
may be other than physical use. It may be in any other relation to the F
goods. There is no reason to limit the use on the goods or to sale of
goods bearing the trademark. (702-H, 703-A)
1.3. There is a distinction between the intention to abandon which
is part of the 'no bonafide use in relation to those goods' in sub section G
(1) of s.46 which gives a cause for removal of the trademark and the
intention to use under sub section (3) of s.46 provides a special defence
to the registered proprietor and is inferred from the existence ofspecial
circumstances. [704-D]
1.4. An intention to use does not necessarily mean that the H
690
SUPREME COURT REPORTS (2003] SUPP. 3 S.C.R.
A proprietor must show the marketing of the goods under the trademark.
B
c
The intention to use the trade marks required for the proprietor would
include the intention to permit the user of the trade mark by the
registered user. Indeed that would be the inevitable and logical result
of reading s.46(1) with s.48(2) of the Act. (707-B-C)
Hermes Trade mark, (1872) RPC 425; Bon Martin Trade Mark,
(1989) RPC 536; Mauson & Co. v. Boehm, 26 ch. D. 398; Eaglin v.
Cusenier Co. 221 US 580, 596-598; American Home Products Corporation
v. Mac Laboratories Pvt. Ltd, (1981) 1 SCC 465 and "Astronaut" Trade
Mark, (1972) RPC 655, referred to.
McCarthy in Trademarks and Urifair Competition, (3rd Edn.) Vol.
2 para 17.03, referred to.
2.1. The conclusion of the Joint Registrar and the High Court that
D there were no special circumstances in the trade which justified the alleged
non-user for the period in question was wrong. It was not economically
possible for H to itself put its manufactured goods in the market
E
immediately, can not be taken as being a circumstance which was peculiar
to 'H' above. It was a circumstance which was generally applicable to all
foreign manufacturers of paints and lacquers. (713-E, F)
2.2. When the applications for rectification were made, there was
nothing in law to associate 'A' with the trademarks in question. This
coupled with H's attempts to appoint Hansa as registered user had to be
kept in sight while considering the defence of special circumstances under
F s.46(3) of the Act. The law is that even an economical impracticability
would amount to special circumstance. (713-A, 712-A, HJ
2.3. 'H' had shown that there was no intention to abandon the
trademarks. It is a complete defence to the action. The onus to establish
the first two conditions in s.46 of the Act lies with the applicant,
G whereas the burden of proving the existence of special circumstances
is on the proprietor of the trade marks. These conditions are not to
be cumulatively proved but established seriatim. There is no question
of the third condition being established unless the second one has
already been proved and there is no question of the second one even
H being considered unless the High Court or the Registrar is satisfied as
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD.
691
to the locus standi of the applicant. [710-C, 698-G-H, 699-A)
A
Aktiebolaget Manus v. R.J Fullwood and Bland, Ltd., (1949) 66 RPC
71; Mauson & Co. v. Boehm, 26 Ch. D. 398; Bali Trade Mark (Rectification
'
Ch.D.) 1966 RPC 387; Berlei (UK) Ltd v. Bali Brassiere Co. Inc., (1969)
2 ALL ER 812; A.J. Vulcan v. V.S. Palanichamy, AIR (1969) Cal. 43; B
Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. 1989 PTC 14; Cycle
Corporation of India Ltd v. T.I. Raleigh Industries Pvt. Ltd., (1996) 9 SCC
430, referred to.
,·
3.1. This was a fit case where the Assistant Registrar at Madras
should have exercised his discretion under s.18 and rejected 'A's C
application for registration. Not only was no positive proof of an
intention to use the device or the trade mark adduced by 'A' but even
the evidence shows a conscious abandonment of the device in 1971 by
the issuance of the public advertisements. (718-H, 719-A]
3.2 If the manufacturer was the first to use the device as a trade
mark, he alone can claim property over the name as a trade mark.
Taking into consideration the continued user of the mark since 1979
D
by Han_sa, it should have been assumed that the device had over the
period of so many years become distinctive of Hausa's product and
therefore to allow registration of the device in 'A's name might deceive E
the public. (719-8, C, 715-C]
Law of Trade Marks (Trade Marks Act, 1999) and Passing Off by
P. Narayanan Fifth Edition P.34, referred to
3.3. The approach of the Court that once the objections of H and
Hansa to the application for registration were overruled, 'A's
applications for registration of the device were to be automatically
allowed, was fallacious. (714-E, G]
F
4. The phrase "person aggrieved" for the purposes of removal on G
the ground of non-use under s.46 has a different connotation from the
phrase used in s.56 for cancelling or expunging or varying an entry
wrongly made or remaining in the Register. In the latter case the locus
standi would be ascertained liberally, since it would not only be against
the interest of other persons carrying on the same trade but also in the H
692
SUPREME COURT REPORTS [2003) SUPP. 3 S.C.R.
A interest of the public to have such wrongful entry removed.
[699-H, 700-A, BJ
Powell's Trade Mark (1894 (11) RPC 4); Wright, Crossley, Tm :
1998 (15) RPC 133, 377, referred to.
B
CIVIL APPELLATE JURISDICTION : Civil Appeal Nos. 5307-11
c
of 1993.
From the Judgment and Order dated I 6.4. 92 of the Madras High
Court in T.M.S.A. Nos. 2 to 6 of 1990.
WITH
C.A. Nos. 5312 and 12A-E/93 and 7294 of 2003.
H.N. Salve, Preetish Kapur, Rajan Narain, Sajan Narain, Ashim
D Aggarwal, Rajiv Jha and Manmohan Singh for the Appellants.
E
Ramamoorthy, V. Balaji, Ms. T.S. Shanthi, Ms. Aarthi Radhakrishnan
and A.T.M. Sampath for the Respondent.
The Judgment of the Court was delivered by
RUMA PAL, J. : The trademarks which are the subject matter of
dispute in these appeals were invented by James Hardie and Company
Private Ltd., the predecessor in interest of the first appellant (who will be
referred to as Hardie). The trademarks consist of the words 'Spartan' and
'Spartan Velox' and a rear picture of the upper body of a helmeted warrior
F carrying a shield and spear (which will be referred to hereafter as the
Hardie device). Registration which was granted in respect of the trademarks
in Australia and New Zealand in 1926 and 1927 continues till today. The
original trademarks as well as their modified forms, which were also
subsequently registered, have been in use by Hardie or its predecessor
G in interest of paints and lacquers and other surface coatings since that
date.
It is the case of Hardie that it also wanted to commence business in
India and to this end took steps to have the words "Spartan" and "Spartan
Velox" registered in this country as far back as in 1940. The words were
H entered in the Register of Trade Marks at Calcutta in Hardie's name. The
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD. [RUMA PAL] 693
registration was valid for what was then undivided India and other South A
Asian countries.
On 6th November 1946, a collaboration agreement was entered into
between Hardie and the respondent (who will be described as Addisons)
for a period of 20 years under which addisons was to be Hardie' s "Chief B
agent" in India and other named territories for selling surface coatings
supplied by Hardie. The agreement also envisaged Addisons being the
registered user of the trademarks during the period of the agreement and
also the setting up of a factory by Addisons at Madras to manufacture the
surface coatings according to Hardie's formulae. Addisons undertook that C
all formulae and technical information which may be supplied to it by
Hardie would be treated as strictly confidential.
Pursuant to the collaboration agreement, between 1946 to 1949,
Hardie' s products were marketed in India through Addisons under Hardie' s D
registered trademarks and device. By 1948 Addisons had set up its own
factory at Chennai for manufacturing paints and lacquers and other surface
coatings with the technical know-how supplied by Hardie to Addisons. The
products were then sold by Addisons under the trade mark and device of
Hardie for which Addisons paid Hardie royalty at agreed rates. The E
registered-user agreement between Hardie and Addisons was executed on
I Ith July 1963. Apart from the clauses which ensured Hardie's strict
supervision over the quality of the surface coatings manufactured by
Addisons, the agreement specified :
"The said trade marks shall not be used in conjunction with F
or in close juxtaposition to any other trade mark and shall at all·
times be so described as clearly to indicate that they are the trade
marks of the Proprietors and that they are being used by the Users
only by way of permitted use."
This agreement also contained a clause giving Addisons the option
to acquire Hardie's rights in the trade marks for a consideration calculated
on the basis of the royalties payable for three years as mentioned in the
collaboration agreement. The registered user agreement was initially for a
G
period of three years and was operative upto 31st August, 1968.
H
694
SUPREME COURT REPORTS [2003] SUPP. 3 S.C.R.
A
In 1967, Hardie had agreed to assign its rights in the trademarks to
Addisons for a sum payable in pound sterling. The Reserve Bank of India
allegedly refused permission to Addisons to remit the amount. Whatever
the reason, it is not in dispute that the consideration was not paid. One of
the disputes raised in these appeals relates to the effect of this agreement.
B To return to the narration of facts. In anticipation of the assignment the
Registered User's agreement was cancelled on 3 I st August, I 968. However,
since the consideration was not paid and the assignment did not come
through, Hardie requested Addisons to discontinue the use of Hardie's
trademarks. Correspondence was exchanged between the parties. Addisons
requested for permission to continue to use the trademarks and device
C Hardie allowed them to do so till December, 1971. During this period,
Addisons continued to use Hardie' s trademarks and device on the surface
coatings produced by it.
On 3rd November 1971, Addisons applied for registration of a device
D which consisted of the frontal view ofa standing helmeted warrior holding
a shield and spear. On I Ith November, 1971 Addisons informed Hardie
that with effect from !st December 1971, it would discontinue the use of
Hardie's trade marks and that Addisons had made arrangements to market
its products in its own brand name. This was followed by several
E advertisements by Addisons in newspapers to the effect that Addisons'
products would no longer be sold under the old trade marks but under the
brand-name Addisons with the pictorial representation of the standing
warrior.
On 6th December, 1971, Hardie applied for registration of the
F composite marks of "Spartan" and Hardie' s device in respect of surface
coatings. However, the application was withdrawn on 26th April, 1974.
In November I 976, Addisons obtained registration of the standing
warrior device. In the same year it filed three applications before the
G Registrar of Trade Marks at Mumbai for registration ofHardie's trademarks.
The applications were rejected on the grounds of identity and deceptive
similarity with Hardie's registered trademarks.
During this period, that is between 1972 to 1977, negotiations took
place between Hardie and Hansa, the second appellant before us, for
H appointing Hansa, the registered user of Hardie' s trademarks in India. The
HARDIE TRADING LTD. ,·.ADDISONS PAINT AND CHEMICALS LTD. [RUMA PAL] 695
agreement was ultimately executed on 31st March, 1977.
About two months later, on 30th May, 1977 Addisons applied in
Calcutta for rectification of the Register of Trademarks by deleting
Hardie' s trademarks under Section 46(1) of the Act.
A
On 18th November, 1977, Addisons filed two applications for B
registration of Hardie' s device. Addi sons also filed three additional
applications for registration in class (2) of the Hardie's device and the word
'Spartan' in class (2) for the wor.ds of 'Spartan Velox' and for class (3)
for Hardie's device with the word 'Spartan'.
c
During the pendency of these applications for rectification and
registration, Hardie and Hansa filed two suits (Suit Nos. 835 and 836 of
1978) in the Calcutta High Court in November, 1978, for inter alia an
injunction restraining Addisons from dealing in paints al)d other surface
coatings under Hardie's trademarks or device. Interlocutory applications D
were filed by Hardie and Hansa in these suits which were disposed of by
a consent order on 22nd February, 1979. The consent order in effect
allowed Hardie and Hansa to continue to use the registered trademarks and
device of Hardie, and allowed Addisons to use its registered trademarks
and device of the standing warrior until the disposal of the suits. The suits
are still pending. The scope and effect of this consent order is also one of E
the issues to be determined in these appeals.
December 1979 saw Addisons file a civil suit in the Madras High
Court (C.S. No. 204of1978) against Hansa seeking a permanent injunction
restraining Hansa from selling paints in containers which were identical to p
or deceptively similar with Hardie's trademarks or device which Addisons
claimed had been used by it since 1963. An application was filed by
Addisons in the suit pending before the High Court in Madras in 1979,
alleging that Hardie and Hansa had committed contempt by using Hardie's
device. This was disposed of eventually by the Madras High Court with G
the direction that status quo was to be continued in terms of the consent
Order dated 22nd February, 1979 in the Calcutta High Court proceedings.
The suit is pending.
In the same month, Hardie filed an application in the Calcutta suit
for stay of the rectification proceedings which were then pending before H
696
SUPREME COURT REPORTS [2003] SUPP. 3 S.C.R.
A the Joint Registrar of Trade Marks at Calcutta. The application was
dismissed by the learned Single Judge of the Calcutta High Court and the
appeal therefrom dismissed by the Division Bench. The application for
rectification filed by Addisons was allowed by the Joint Registrar of Trade
Marks at Calcutta by his order dated 12th September, 1985 as a result of
B which Hardie's trademarks were expunged from the Register of Trade
Marks. Both Hardie and Hansa appealed against this order to the Calcutta
High Court before a learned Single Judge. The appeal was dismissed on
6th July, 1990. On a further appeal the Division Bench confirmed the
learned Single Judge's order on 22nd August, 1997. The decision of the
C Division Bench is the subject matter of S.L.P. No. 206 of 1998.
Pending the rectification proceedings in Calcutta, an application was
filed by Hansa for stay of the registration proceedings relating to 'Spartan'
and 'Spartan Velox'. The application was rejected by the Assistant
Registrar, Madras on 19th June 1989. On the, same day Addisons'
D application for registration of Hardie's device was allowed. Although five
appeals were preferred in respect of each of the separate applications before
the Madras High Court the learned Single Judge dismissed all the five
appeals by a common judgment.
The matter came up before the Division Bench. There was a
E difference of opinion. The Third Judge agreed with the view that the
appeals should be dismissed. The majority decision is the subject matter
of challenge in C.A. Nos. 5307-5311 of 1993.
Till the decision of the Madras High Court Hansa's and Hardie's
F opposition to Addisons' applications for registration of' Spartan' and' Spartan
Velox' were still pending. On 2nd June, 1992, the applications were
allowed by the Registrar at Madras. This has been challenged in C.A. Nos.
5312 & 12A - E of 1993.
When leave was granted on the special leave petition filed by Hansa
G and Hardie on 8th October, 1993 impugning the order of the Madras High
Court, this Court had directed the continuation of the status quo. That status
quo is still operative. This in brief is the background of the appeals.
We propose to deal with the issue ofrectification (which is the subject
H matter of SLP 206 of 1988) first and then the question of registration of
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD. [RUMA PAL] 697
Hardie's device and trademarks separately (which are the subject matter A
of C.A. No. 5307-11/1993 and C.A. No. 5312 and 12A-E of 1993
respectively.
S.L.P. (C) No. 206 of 1998
Rectification of the Trademarks Register
B
Leave granted.
In the rectification applications filed on 27th May, 1977 by Addisons,
it was stated that Addisons had "invented and adopted" the trademark of C
Addison's and the device of warrior in 1971 to distinguish the goods
manufactured by it from others. The collaboration agreement was referred
to in passing but the details were not given, as, according to Addison's
statement, they were not necessary for the determination of the application
for rectification.
D
The application went on to say that from 1971 onwards Addisons "felt
the necessity of having a second trade mark of distinguishing certain goods
manufactured and sold by it. After giving the matter serious thought, it
decided to use a trade mark containing a device of a warrior and the legend
Spartan". The application also says that Addisons came to know of the E
registration of the trademarks in Hardie's name only after Addisons'
application for registration of the trademarks was rejected by the Registrar
of Trade Marks at Bombay. It "'.as also said that "extensive market
research" had been done and it was discovered that the trademarks had not
been used in India for over five years continuously. Addisons claimed that
the trade marks registered in Hardie' s name were identical of deceptively F
similar with the trademarks sought to be registered by Addisons giving it
the locus. to seek rectification of the Trademarks Register by expunging
Hardie' s trademarks therefrom.
Addisons' applications for the removal of the trademarks which were G
registered in Hardie's name since 1946 were only under Section 46(1) of
the Act.
The relevant extracts of Section 46 of the Act read as follows :
"Removal from register and imposition of limitations on ground H
698
A
B
c
D
SUPREME COURT REPORTS [2003] SUPP. 3 S.C.R.
of non-use. -
(!) Subject to the povisions of Section 47, a
registered trade mark 111ay be taken off the register in respect of
any of the goods in respect of which it is registered on application
made in the prescribed mannrr to a High Court or to the Registrar
by any person aggrieved on the ground ...
(b) that up to a date one month before the date of application, a
continuous period of five years or longer had elapsed during
which the trade mark was registered and during which there was
no bona fide use thereof in relation .to those goods by any
proprietor thereof for the time being :
(3)
An application shall not be entitled to rely for the purpose
of clause (b) of sub-section (I) .............. (on any non-use of
a trade mark which is shown to have been due to special
circumstances in the trade and not to any intention to
abandon or not to use the trade mark in relation to the goods
to which the applicaton relates."
Thus before the High Court or the Registrar direct the removal of the
E registered trademarks they must be satisfied in respect of the following :
F
(I)
That the application is by a 'person aggrieved';
(2)
That the trade mark has not been used by the proprietor for
continuous period of at least five years and one month prior
to the date of the application;
(3)
There were no special circumstances which affected the use
of the trade mark during this period by the proprietor.
G
The onus to establish the first two conditions obviously lies with the
applicant, whereas the burden of proving the existence of special
circumstances is on the proprietor of the trade marks. These conditions are
not to be cumulatively proved but established seriatim. There is no question
of the third condition being established unless the second one has already
H been proved and there is no question of the second one even being
-
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD. [RUMA PAL] 699
considered unless the High Court or the Registrar is satisfied as to the locus A
standi of the applicant.
(a) Person aggrieved - On this issue the Joint Registrar held that
Addi sons was a "person aggrieved". The principal ground of doing so was
the fact that Addisons carried on the same trade and its applications for
registration had been rejected on the ground of the existence of Hardies B
marks.
The learned Single Judge upheld the decision of the Registrar on this
issue because Addisons was in the same trade as Hardie "and may be able
to 11se the said mark in relation to own goods but for the existence of the C
registered marks in the name of Hardie". The Division Bench affirmed this
view.
The phrase "person aggrieved" is a common enough statutory
precondition for a valid complaint or appeal. The phrase has been variously
construed depending on the context in which it occurs. Three sections viz. D
Section 46, 56 and 69 of the Act contain the phrase. Section 46 deals with
the removal of a registered trademark from the register on the ground of
non-use. This section presupposes that the registration which was validly
made is liable to be taken off by subsequent non-user. Section 56 on the
other hand deals with situations where the initial registration should not E
have been or was incorrectly made. The situations covered by this section
include :- (a) the contravention or failure to observe a condition for
registration; (b) the absence of an entry; ( c) an entry made without
sufficient cause; ( d) a wrong entry; and ( e) any error or defect in the entry.
Such type of actions are commenced for the "purity of the register" which p
it is in public interest to maintain. Applications under Sections 46 and 56
may be made to the Registrar who is competent to grant the relief.
"Person's aggrieved" may also apply for cancellation or varying an entry
in the register relating to a certification trademark to the Central Government
in certain circumstances. Since we are not concerned with a certification
trademark, the process for regisfratfon of which is entirely different, we G
may exclude the interpretation of the phrase "person aggrieved" occurring
in section 69 from consideration for the purposes of this judgment.
In our opinion the phrase "person aggrieved" for the purposes of
removal on the ground of non-use under section 46 has a different H
700
SUPREME COURT REPORTS [2003) SUPP. 3 S.C.R.
A connotation from the phrase used in section 56 for cancelling or expunging
or varying an entry wrongly made or remaining in the Register.
In the latter case the locus standi would be ascertained liberally, since
it would not only be against the interest of other persons carrying on the
B same trade but also in the interest of the public to have such wrongful entry
removed. It was in this sense that the House of Lords defined "person
aggrieved" in the matter of Powell's Trade Mark, (1894) 11 RPC 4 :
" ... although they were no doubt inserted to prevent officious
interference by those who had no interest at all in the Register
C
being correct, and to exclude a mere common informer, it is
undoubtedly of public interest that they should not be unduly
limited, inasmuch as it is a public mischief that there should
remain upon the Register a Mark which ought not to be there, and
by which many persons may be affected, who, nevertheless,
D
would not be willing to enter upon the risk and expense of
litigation.
Wherever it can be shown, as here, that the Applicant is in
the same trade as the person who has registered the Trade mark,
and wherever the Trade Mark, if remaining on the Register,
E
would, or might, limit the legal rights of the Applicant, so that by
reason, of the existence of the entry on the Register he could not
lawfully do that which, but for the existence of the mark upon the
Register, he could lawfully do, it appears to me he has a locus
standi to be heard as a person aggrieved."
F
(Emphasis added)
But if the ground for rectification is merely based on non-user i.e.
under Section 46 of the Act, that is not really on account of any public
mischief by way of an incorrect entry. The non-user does not by itself
render the entry incorrect but it gives a right to a person whose interest
G is affected to apply for its removal. An applicant must therefore show that
"in some possible way he may be damaged or injured if the Trade Mark
is allowed to stand; and by "possible" I mean possible in a practical sense,
and not merely in a fantastic view ..... All cases of this kind, where the
orginal registration is not illegal or improper, ought to be considered as
H questions of common sense, to a certain extent, at any rate; and I think the
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD. [RUMA PAL] 701
Applicants ought to show something approaching a sufficient or proper A
reason for applying to have the Trade Mark expunged. It certainly is not
sufficient reason that they are at loggerheads with the Respondents or
desire in someway to injure them." 1
Addisons' application was one under Section 46 and the test to
determine whether the applicant was a 'person aggrieved' within the B
meaning of that section should have been the one laid down by Romer,
J. in Wright's case and not the one propounded by the house of Lords in
the matter of Powell's Trade Mark (supra). The High Court and the Joint
Registrar fell into error in not drawing this distinction. However, it is not
necessary to dilate on this aspect of the matter as the appellant has really C
argued on the second and third aspects of section 46 viz. the alleged nonuse of the trade marks by Hardie and special circumstances.
(b) Non-use of the trademarks : Under Section 46 (I )(b) of the Act
an apP.lication for removal of a registered trademark will be allowed only
if a continuous period of five years or longer has elapsed upto the date of D
one month prior to the date of the application during which there was no
bona fide use by the proprietor of the trademark sought to be removed.
Since Addisons' applications for rectification were filed on 30th May,
1977, the relevant period for consideration of the question of non-use is
from 30th April, 1972 to 30th April, 1977.
Hardie has contended that there was no non-use of the registered
trademarks during that period. It is submitted that in any event it is only
such non-use as evinced an intention to abandon the trademarks which
would enable an applicant to apply for removal of the trade-marks. It is
said that Addisons had failed to plead or establish this.
E
F
The word 'use' according to the respondent means 'actually putting
the mark in the business and utilizing the same for selling the goods'. It
is said that there had been no use of the trade mark by Hardie and no efforts
taken to manufacture goods using the trade mark since I 971 and, therefore,
it must be taken that Hardie had abandoned the trade mark. It is also urged
in the written submissions that the 'plea of user' had not been argued either G
before the Single Judge or the Division Bench of the High Court.
The last submission does not appear to be correct. The Division
L Wright, Crossley, Tm: 1898 (15) RPC 131 at p. 133 per Romer. J affirmed un
appeal ( 1898) 15 RPC 3 77.
H
702
SUPREME COURT REPORTS [2003] SUPP. 3 S.C'.R.
A Bench had addressed itself to the question and as far as the intent to use
the existing trademark was concerned it was said that there was
" ..... an onerous duty cast onto the registered proprietor not
only to show that there is no intentional abandonment or intent
to use the trade mark, in relation to the goods, but there must exist
B
a definite intent to use the mark and a continuation of the same
throughout the entire period as envisaged in the statute but all his
efforts were rendered fruitless by reason of the statutory ban on
imports. Th affidavit of Buttress, however, negates such a situation and as such the issue under Section 46(3) being answered in
C
favour of the appellant does not and cannot arise".
In any event the contention has been expressly raised in the special
leave petition and argued extensively by counsel for the appellants.
Submissions have been equally extensively made both in the counter
affidavit and by Addison's counsel in the course of arguments before us.
D In the circumstance we do not think that it would at all be proper not to
decide the issue.
The Joint Registrar construed the word "use" in section 46(l)(b) to
mean use of the trademark on the goods in respect of which the trade mark
is registered. He relied upon letter written by Hansa' s lawyers to Addisons
E dated 2.5th Dece!Rber 1977 in which it was stated that Hansa had not
manufact\lred or sold any goods under the trademarks, to hold - first, that
neither Hansa nor Hardie had sold any goods during the relevant period
and, second, that therefore there was no use of the registered trademarks.
Both the Single Judge and the Division Bench appear to have proceeded
F on the same basis.
G
The question therefore is - is the word "use" in Section 46(1) so
limited? The phrase used in Section 46 is "bonafide use thereof in relation
to those goods". The phrase has been defined in Section 2(2)(b) of the Act
as:
"to the use of a mark in relation to goods shall be construed as
a reference to the use of the mark upon, or in any physical or in
any other relation whatsoever, to such goods".
This shows that the use may be other than physical. It may be in any
'-
H other relation to the goods. Given this statutory meaning, we see no reason
HARDIE TRADING LTD. v.ADDISONS PAINT AND CHEMICALS LTD. [RUMA PAL] 703
to limit the user to use on the goods or to sale of goods bearing the A
trademark.
In Hermes Trade Mark 1872 RPC 425, the registered proprietor had
inserted advertisements in which the trademark appeared in relation to the
watches it manufactured in the annual trade publication. It was also in B
evidence that the registered proprietor placed an order for parts of the
watches during the period of alleged non-use although the actual sale of
the watches took place subsequently. In this factual background, the words,
'other relation' in an identical statutory provision in the United Kingdom
were construed to mean "something other than actually being upon the C
goods or in physical relation to them - that would cover the use of the mark,
............... ., for example, in advertisements, in invoices, in orders and so
on". It was also said, the phrase 'in the course of trade' must be wide
enough to embrace the steps necessary for the production of the goods as
well as the actual placing of them on the market. It was held that even D
though there was no use of the mark upon or in physical relation to the
"gogds, but it was used in "other relation", i.e. to say in non physical use .
. A mon1 recent example of the law in England of such "non-physical
use" is to be found in Bon Matin Trade Mark 1989 RPC 536. The trade
mark was registered in the United Kingdom in 1979 in respect of .a~ange E
of cosmetics. The registered proprietor was a resident of France and
manufactured and sold the goods there. In 1984, an application was made
to expunge the registration on the ground that there had been no bona fide
use of the mark in the United Kingdom for a continuous period of five
years. The only use of the mark prior to the date of the application was F
by issue of price lists and promotional literature on two occasions.